IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Jeroen Poeze, et al.
`In re Patent of:
`10,631,765 Attorney Docket No.: 50095-0024IP1
`U.S. Patent No.:
`April 28, 2020
`
`Issue Date:
`Appl. Serial No.: 16/725,478
`
`Filing Date:
`December 23, 2019
`
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR NONIN-
`VASIVE MEASUREMENT OF BLOOD CONSTITUENTS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,631,765 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 4
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 4
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 4
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 5
`D. Service Information .................................................................................. 5
`PETITIONER HAS STANDING TO REQUEST IPR ................................... 6
`II.
`III. OVERVIEW OF THE ’765 PATENT ............................................................ 6
`A. Brief Description ....................................................................................... 6
`B. Level of Ordinary Skill in the Art ............................................................. 9
`C. Claim Construction ................................................................................... 9
`IV. APPLICATION OF PRIOR ART TO THE ’765 PATENT CLAIMS ......... 10
`A. Asserted Grounds and References .......................................................... 10
`B. GROUND 1: Claims 1-8, 10-13, 15-16, 20-29 are obvious over
`Mendelson-799, Ohsaki, Schulz, and Mendelson-2006 ......................... 11
`1. Overview of Mendelson-799 ......................................................... 11
`2. Overview of Ohsaki....................................................................... 17
`3. Overview of Schulz ....................................................................... 20
`4. Overview of Mendelson-2006 ....................................................... 21
`5.
`Combination of Mendelson-799, Ohsaki, Schulz, and Mendelson-
`2006 ............................................................................................... 23
`6. Analysis ......................................................................................... 40
`C. GROUND 2: Claim 9 is obvious over Mendelson-799, Ohsaki, Schulz,
`Mendelson-2006, and Bergey ................................................................. 88
`1. Overview of Bergey ...................................................................... 88
`2.
`Combination of Mendelson-799, Ohsaki, Schulz, Mendelson-2006
`and Bergey ..................................................................................... 89
`D. GROUND 3: Claim 14 is obvious over Mendelson-799, Ohsaki, Schulz,
`Mendelson-2006, and Goldsmith ............................................................ 91
`1. Overview of Goldsmith ................................................................. 91
`2.
`Combination of Mendelson-799, Ohsaki, Schulz, Mendelson-2006
`and Goldsmith ............................................................................... 92
`E. GROUND 4: Claims 17-19 are obvious over Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006, and Aizawa ................................................... 94
`1. Overview of Aizawa ...................................................................... 94
`2.
`Combination of Mendelson-799, Ohsaki, Schulz, Mendelson-2006
`and Aizawa .................................................................................... 96
`
`i
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION ........100
`V.
`VI. CONCLUSION ............................................................................................106
`VII. PAYMENT OF FEES – 37 C.F.R. § 42.103 ...............................................106
`
`
`
`
`
`ii
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,631,765
`
`APPLE-1002
`
`File History for the ‘765 Patent
`
`APPLE-1003
`
`Declaration of Dr. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil Ac-
`tion No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
`US Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`JP Pub. No. 2006/296564 (“Inokawa”)
`
`APPLE-1008
`
`Certified English Translation of Inokawa and Translator’s Dec-
`laration
`
`APPLE-1009
`
`US Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1010
`
`“A Wearable Reflectance Pulse Oximeter for Remote Physio-
`logical Monitoring,” Y. Mendelson, et al.; Proceedings of the
`28th IEEE EMBS Annual International Conference, 2006; pp.
`912-915 (“Mendelson-2006”)
`
`APPLE-1011
`
`US Pub. No. US 2007/0093786 (“Goldsmith”)
`
`APPLE-1012
`
`US Patent No. 6,801,799 (“Mendelson-799”)
`
`APPLE-1013
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1014
`
`RESERVED
`
`APPLE-1015
`
`RESERVED
`
`APPLE-1016
`
`US Patent No. 3,789,601 (“Bergey”)
`
`iii
`
`

`

`APPLE-1017
`
`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609; As-
`sociation for the Advancement of Medical Instrumentation, vol.
`22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`APPLE-1018
`
`“Skin Reflectance Pulse Oximetry: In Vivo Measurements from
`the Forearm and Calf,” Y. Mendelson, et al.; Journal of Clinical
`Monitoring, vol. 7, No. 1, January 1991 (“Mendelson 1991”)
`
`APPLE-1019
`
`Excerpts from Design of Pulse Oximeters, J.G. Webster; Insti-
`tution of Physics Publishing, 1997 (“Webster”)
`
`APPLE-1020
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1021
`
`Excerpts from How to Do Everything with Windows Mobile,
`Frank McPherson; McGraw Hill, 2006 (“McPherson”)
`
`APPLE-1022
`
`Excerpts from Master Visually Windows Mobile 2003, Bill
`Landon, et al.; Wiley Publishing, Inc., 2004 (“Landon”)
`
`APPLE-1023
`
`“Stimulating Student Learning with a Novel ‘In-House’ Pulse
`Oximeter Design,” J. Yao and S. Warren; Proceedings of the
`2005 American Society for Engineering Education Annual
`Conference & Exposition, 2005 (“Yao”)
`
`APPLE-1024
`
`US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1025
`
`U.S. Patent No. 7,031,728 (“Beyer”)
`
`APPLE-1026
`
`US Pub. No. 2007/0145255 (“Nishikawa”)
`
`APPLE-1027
`
`National Instruments LabVIEW User Manual
`
`APPLE-1028 to 1030
`
`RESERVED
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`iv
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`APPLE-1032
`
`Stipulation by Apple
`
`APPLE-1033
`
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`APPLE-1034
`
`APPLE-1035
`
`Joseph Guzman, “Fauci says second wave of coronavirus is ‘in-
`evitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-disas-
`ters/495211-fauci-says-second-wave-of-coronavirus-is
`
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`
`APPLE-1036
`
`
`APPLE-1037
`
`Order Amending Scheduling Order, Masimo et al. v. True
`Wearables et al., Case 8:18-CV-02001 (July 7, 2020)
`
`Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1038
`
`U.S. Patent No. 7,558,622 (“Tran”)
`
`APPLE-1039
`
`Declaration of Jacob R. Munford
`
`APPLE-1040
`
`Order Granting Stipulation to Amend the Scheduling Order,
`Masimo v. Apple et al., Case 8:20-cv-00048, Paper 201 (Sep-
`tember 21, 2020)
`
`APPLE-1041
`
`U.S. Patent No. 7,251,513 (“Kondoh”)
`
`APPLE-1042
`
`JP Pub. No. 2005-270543 (“Tanagi”)
`
`APPLE-1043
`
`Certified English Translation of Tanagi and Translator’s Decla-
`ration
`
`
`
`
`
`v
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 129 (“the
`
`Challenged Claims”) of U.S. Patent No. 10,631,765 (“the ‘765 patent”). As ex-
`
`plained in this petition, there exists a reasonable likelihood that Apple will prevail
`
`with respect to at least one of the Challenged Claims.
`
`The ’765 Patent describes and claims a purported improvement to a “physio-
`
`logical sensor device” included within a “physiological measurement system”: a
`
`cover with a rigid “protruding convex surface” that is configured to be located
`
`above “at least four” detectors. APPLE-1001, 10:61-11:14, 14:3-10, 24:16-35,
`
`36:30-41, 44:51-45:15 (claim 1), FIGS. 1, 14D. Each detector “can be imple-
`
`mented using one or more photodiodes, phototransistors, or the like,” “can capture
`
`and measure light transmitted from [an] emitter…that has been attenuated or re-
`
`flected from the tissue,” and can “output a detector signal…responsive to the
`
`light….”
`
`The claimed sensor was not new. To the contrary, the ’765 Patent was
`
`granted without full consideration to the wide body of applicable prior art. See
`
`generally APPLE-1002. And, as Dr. Thomas Kenny explains in his accompanying
`
`declaration, devices incorporating pulse rate detectors and pulse oximeters with co-
`
`vers were already known by the ’765 Patent’s earliest effective filing date, and
`
`each feature recited in the Challenged Claims would have been obvious to a
`
`2
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`POSITA. APPLE-1003, ¶¶[0020]-[0241]; APPLE-1001, 44:50-47:22.
`
`For example, Mendelson-799 (APPLE-1012) discloses a “sensor for...optical
`
`measurement” featuring a housing with a “light source 12” and an array of twelve
`
`“discrete detectors (e.g., photodiodes).” APPLE-1012, Title, Abstract, 9:22-40,
`
`10:16-37, FIGS. 7, 8. And, similar to the ’765 Patent, Ohsaki (APPLE-1009) ren-
`
`ders obvious an optical sensor that features a cover with a protruding convex sur-
`
`face, as does Inokawa (APPLE-1007, APPLE-1008). APPLE-1009, Title, Ab-
`
`stract, ¶¶[0016], [0017], FIGS. 1, 2; see also APPLE-1008, ¶¶14-15, FIGS. 2, 3.
`
`As Dr. Kenny explains, a POSITA would have found it obvious to utilize such a
`
`cover in Mendelson’s ’799 sensor. APPLE-1003, ¶¶[0089]-[0100].
`
`Additionally, the ’765 Patent’s claimed “physiological measurement sys-
`
`tem,” which includes “a handheld computing device in wireless communication
`
`with the physiological sensor device,” is not new. See, e.g., APPLE-1001, 44:51-
`
`45:15 (claim 1). Indeed, physiological sensor devices commonly communicated
`
`with handheld computing devices by the ’765 Patent’s earliest effective filing date.
`
`For example, Mendelson-2006’s “wireless wearable pulse oximeter” system in-
`
`cludes a body-worn pulse oximeter that communicates wirelessly with a PDA.
`
`APPLE-1010, Abstract, 1-4, FIGS. 1-3. Moreover, as Dr. Kenny explains, the
`
`claimed “handheld computing device” is a generic computing device, and each of
`
`its recited components are generic computing components. APPLE-1003,
`
`3
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`¶¶[0041]-[0060]; APPLE-1001, 2:45-48, 15:60-16:11, 18:9-28, FIGS. 1, 2D.
`
`The Challenged Claims are unpatentable based on teachings set forth in at
`
`least the references presented in this petition. Apple respectfully submits that an
`
`IPR should be instituted, and that the Challenged Claims should be canceled as un-
`
`patentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple Inc. is the real party-in-interest (RPI).
`
`
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Patent Owner filed a second amended complaint on July 24, 2020 in the U.S.
`
`District Court for the Central District of California (CDCA) (Case No. 8:20-cv-
`
`00048) against Apple, in which Masimo alleged, for the first time, infringement of
`
`the ’765 patent by Apple. The initial complaint in the case, which did not allege
`
`infringement of the ’765 patent, was served to Apple on January 13, 2020.
`
`This Petition is being filed concurrently with another petition for IPR of the
`
`’765 Patent (IPR2020-01715),1 and IPRs challenging claims of related U.S. Patents
`
`
`1 Pursuant to the Trial Practice Guide, both petitions for IPR of the ’765 Patent are
`
`being filed with a paper providing a succinct explanation of the differences be-
`
`tween the petitions, why the issues addressed by the differences are material, and
`
`why the Board should exercise its discretion to institute both petitions.
`
`4
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`10,702,194, 10,702,195, 10,709,366, and 10,624,564 are being filed concurrently
`
`or imminently. No other petitions for IPR of the ’765 Patent have been filed. On
`
`August 31, 2020, Apple filed petitions for IPR of related U.S. Patents 10,258,265
`
`(IPR2020-01520), 10,588,553 (IPR2020-01536 and IPR2020-01537). On Septem-
`
`ber 2, 2020, Apple filed petitions for IPR of related U.S. Patents 10,292,628
`
`(IPR2020-01521) and 10,588,554 (IPR2020-01538 and IPR2020-01539).
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Apple provides the following designation of counsel.
`
`Lead Counsel
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0024IP1@fr.com
`
`Backup counsel
`Andrew B. Patrick, Reg. No. 63,471
`Usman Khan, Reg. No. 70,439
`Grace J. Kim, Reg. No. 71,977
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`PTABInbound@fr.com
`
`
`
`D. Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR50095-0024IP1@fr.com
`
`(referencing No. 50095-0024IP1 and cc’ing PTABInbound@fr.com, axf-
`
`ptab@fr.com, patrick@fr.com , gkim@fr.com, and khan@fr.com).
`
`
`
`5
`
`

`

`II.
`
`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`PETITIONER HAS STANDING TO REQUEST IPR
`Apple certifies that the ’765 patent is available for IPR. This present Peti-
`
`tion is being filed within one year of service of a complaint against Apple in
`
`Masimo Corporation et al. v. Apple Inc., Case No. 8:20-cv-00048 (C.D. Cal.). Ap-
`
`ple is not barred or estopped from requesting this review challenging the Chal-
`
`lenged Claims on the below-identified grounds.
`
`III. OVERVIEW OF THE ’765 PATENT
`A. Brief Description
` An exemplary physiological measurement system 100 illustrated by the
`
`
`
`’765 Patent’s FIG. 1 (reproduced below) includes “a sensor 101…that is coupled to
`
`a processing device or physiological monitor 109.” APPLE-1001, 2:38-40, 5:35-
`
`38, 11:47-49.
`
`
`
`APPLE-1001, FIG. 1.
`
`6
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`“In an embodiment, the sensor 101 and the monitor 109 are integrated to-
`
`
`
`gether into a single unit.” Id., 11:49-51. “In another embodiment, the sensor 101
`
`and the monitor 109 are separate from each other and communicate one with an-
`
`other in any suitable manner, such as via a wired or wireless connection.” Id.,
`
`11:51-57; 17:40-44. The ’765 Patent’s FIGS. 2A-2D (reproduced below) illustrate
`
`“example monitoring devices 200 in which the data collection system 100 can be
`
`housed.” APPLE-1001, 5:39-42, 16:20-31.
`
`APPLE-1001, FIGS. 2A-2D.
`
`
`
`7
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`Each of the illustrated “monitoring devices 200” include a sensor 201 and a
`
`
`
`monitor 209, which act together as components of a physiological sensor device.
`
`Id., FIGS. 2A-2D, 16:20-18:28. APPLE-1003, ¶[0049]; APPLE-1001, 2:38-48,
`
`11:49-57, 16:20-18:28, FIGS. 1, 2A-2D. In at least one embodiment (depicted in
`
`FIG. 2D) that device is part of a larger system including a computer with which the
`
`physiological sensor device communicates. APPLE-1003, ¶[0051]; APPLE-1001,
`
`2:38-48, 11:49-57, 16:20-18:28, FIGS. 1, 2A-2D.
`
`
`
`The ’765’s sensor “may include different architectures.” APPLE-1001,
`
`6:38-49, 35:36-38:20, FIGS. 14A-14I. For example, FIG. 14C (reproduced below)
`
`illustrates a sensor featuring a “detector submount 1400c…positioned under [a]
`
`protrusion 605b in a detector subassembly 1450 illustrated in FIG. 14D” (also re-
`
`produced below).
`
`APPLE-1001, FIGS. 14C, 14D.
`
`8
`
`
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`As illustrated in FIG. 14D, a housing 1430 including “a transparent cover
`
`
`
`1432, upon which the protrusion 605b is disposed” surrounds each of the detectors
`
`1410c. APPLE-1001, 36:30-41; APPLE-1003, ¶[0054].
`
`B. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’765
`
`Patent as of July 3, 2008 (“POSITA”) would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had
`
`a Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to physiological monitoring technol-
`
`ogies. APPLE-1003, ¶¶[0021]-[0022]. Alternatively, the person could have also
`
`had a Master of Science degree in a relevant academic discipline with less than a
`
`year of related work experience in the same discipline. Id.
`
`C. Claim Construction
` Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. § 42.100. Here, based on the evidence below and the prior art’s description
`
`of the claimed elements being similar to that of the ’765 patent specification, no
`
`formal claim constructions are necessary in this proceeding because “claim terms
`
`9
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`need only be construed to the extent necessary to resolve the controversy.” Well-
`
`man, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). APPLE-
`
`1003, ¶[0023].
`
`IV. APPLICATION OF PRIOR ART TO THE ’765 PATENT CLAIMS
`A. Asserted Grounds and References
`The Challenged Claims are invalid based on the grounds noted in the table
`
`below, as further explained in this Petition. Accompanying explanations and sup-
`
`port are provided in the Declaration of Dr. Thomas Kenny (APPLE-1003). AP-
`
`PLE-1003, ¶¶[0001]-[00243].
`
`Ground
`1
`
`
`
`
`
`
`
`Basis for Rejection
`Claims
`1-8, 10-13, 15-16, 20-29 Obvious (§ 103) based on Mendelson-
`799 in combination with Ohsaki, Schulz,
`and Mendelson-2006
`Obvious (§ 103) based on Mendelson-
`799 in combination with Ohsaki, Schulz,
`Mendelson-2006, and Bergey
`Obvious (§ 103) based on Mendelson-
`799 in combination with Ohsaki, Schulz,
`Mendelson-2006, and Goldsmith
`Obvious (§ 103) based on Mendelson-
`799 in combination with Ohsaki, Schulz,
`Mendelson-2006, and Aizawa
`
`17-19
`
`9
`
`14
`
`
`
`Each applied reference pre-dates U.S. provisional application 61/078,207,
`
`filed on July 3, 2008, which is the earliest filed application from which the ’765
`
`patent claims priority. Petitioner does not take a position as to whether the ’765
`
`Patent is entitled to the priority date of July 3, 2008 (hereinafter “Critical Date” or
`
`10
`
`

`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`“Earliest Effective Filing Date”), but has applied references that pre-date the Criti-
`
`cal Date and qualify as prior art as shown in the table below.
`
`Reference
`
`Date
`
`Section
`
`Mendelson-799
`
`US 6,801,799
`
`07/31/2003 (published)
`
`Ohsaki
`
`Schulz
`
`US 2001/0056243
`
`12/27/2001 (published)
`
`US 2004/0054291
`
`03/18/2004 (published)
`
`Mendelson-2006
`
`(NPL)
`
`09/2006 (published)
`
`Bergey
`
`US 3,789,601
`
`02/05/1974 (issued)
`
`Goldsmith
`
`US 2007/0093786
`
`4/26/2007 (published)
`
`Aizawa
`
`US 2002/0188210
`
`12/12/2002 (published)
`
`102(b)
`
`102(b)
`
`102(b)
`
`102(b)
`
`102(b)
`
`102(b)
`
`102(b)
`
`
`
`B. GROUND 1: Claims 1-8, 10-13, 15-16, 20-29 are obvious
`over Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`1. Overview of Mendelson-799
`Similar to the ’765 Patent, Mendelson-799 describes a “sensor for use in an
`
`optical measurement device and a method for non-invasive measurement of a
`
`blood parameter.” APPLE-1012, Title, Abstract.
`
`Mendelson-799’s FIG. 7 (reproduced below) illustrates an optical sensor 10
`
`that includes a “light source 12 composed of three closely spaced light emitting el-
`
`ements,” “an array of discrete detectors (e.g., photodiodes),” including “a ‘far’ de-
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`11
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`tector 16 and a ‘near’ detector 18, arranged in two concentric ring-like arrange-
`
`ments…surrounding the light emitting elements; and a light shield 14.” Id., 9:22-
`
`33. “All these elements are accommodated in a sensor housing 17.” Id., 9:33-40.
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`
`
`
`
`APPLE-1012, FIG. 7 (annotated).
`
`Mendelson-799’s FIG. 7 illustrates sensor housing 17 as encircling the vari-
`
`ous components that sensor housing 17 is said to accommodate, but does not pre-
`
`sent sensor housing 17 in profile. See APPLE-1012, 9:23-40, Abstract, FIG. 7;
`
`APPLE-1003, ¶[0064]. As explained below, to the extent that Mendelson-799
`
`does not disclose sensor housing 17 as including an opaque wall that surrounds the
`
`accommodated components, a POSITA would have found it obvious to connect, to
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`12
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`the illustrated portion of sensor housing 17, an opaque wall that surrounds the ar-
`
`ray of discrete detectors included in detector rings 16 and 18, both to shield the de-
`
`tectors from ambient light, and protect the detectors from external forces. Id.,
`
`9:24-40, FIG. 7; APPLE-1003, ¶[0064].
`
`For example, Mendelson-799 does not present light shield 14 in profile, but
`
`describes light shield 14 as being “positioned between the photodiodes and the
`
`light emitting elements,” so as to “prevent[] direct optical coupling between them,
`
`thereby maximizing the fraction of backscattered light passing through the arteri-
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`ally perfused vascular tissue in the detected light.” APPLE-1012, 9:35-40.
`
`From this and related description, a POSITA would have recognized Men-
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`delson-799’s goal of protecting the photodiodes from optical noise; accordingly, a
`
`POSITA would have been motivated to connect an opaque wall to the portion of
`
`sensor housing 17 that Mendelson-799 illustrates as circumscribing detectors 16
`
`and 18, so as to shield the detectors from ambient light, and protect the detectors
`
`from external forces. APPLE-1003, ¶[0066]; APPLE-1012, Abstract, 9:22-40,
`
`14:1-17, FIG. 7; see also APPLE-1019, 79, 86 (“The probe…must be protected
`
`from ambient light”), 94.
`
`Indeed, several references that are mentioned within Mendelson-799 itself
`
`depict and describe pulse oximeter sensors that feature detectors housed within sur-
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`13
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`rounding walls. APPLE-1003, ¶¶[0067]-[0070]; APPLE-1012, 4:13-22. For ex-
`
`ample, and as shown below, two papers by the sole inventor of Mendelson-799
`
`(Yitzhak Mendelson), published in 1988 and 1991, depict walls surrounding the
`
`photodiodes included within their respective pulse oximeter sensors. APPLE-
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`1017, 2-3, 6, FIG. 2; APPLE-1018, 1, 2, FIG. 1.
`
`APPLE-1017, FIG. 2 (annotated excerpt).
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`14
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`APPLE-1018, FIG. 1 (annotated).
`
`
`
`Similar to these and other known configurations in which an opaque wall in-
`
`cluded within an optical sensor’s housing surrounds the photodiodes accommo-
`
`dated by that housing, and thereby shields the photodiodes from both external
`
`forces and ambient light, a POSITA would have connected an opaque wall config-
`
`ured to circumscribe detectors 16 and 18 to the planar substrate provided by Men-
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`delson-799’s sensor housing 17, as shown below in the section view of the sensor
`
`that would have resulted. APPLE-1003, ¶¶[0067]-[0070]; APPLE-1012, 4:13-22,
`
`9:33-40, FIG. 7; APPLE-1017, 2-3, 6, FIG. 1; APPLE-1018, 1, 2, FIG. 2; APPLE-
`
`1019, 79, 86, 94; APPLE-1009, ¶¶[0015], [0017], [0025], FIGS. 1, 2 (illustrating
`
`an opaque wall that is connected to a planar substrate and surrounds light emitting
`
`and receiving elements); APPLE-1006, ¶¶[0023], [0024], FIG. 1(b).
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`15
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`
`
`APPLE-1012, FIG. 7 (annotated, with additional section view).
`
`As noted above, Mendelson-799 describes its sensor as being configured
`
`“for use in an optical measurement device.” APPLE-1012, Abstract, 8:37-41,
`
`9:22-40, 10:15-22; FIGS. 7, 8; APPLE-1003, ¶[0071]. Mendelson-799’s FIG. 8
`
`(reproduced below) “illustrates a block-diagram of a pulse oximeter 20 utiliz-
`
`ing…sensor 10” (APPLE-1012, 8:39-40, 10:16-17):
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`16
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`APPLE-1012, FIG. 8 (annotated).
`
`
`
`As shown, “[t]he pulse oximeter typically includes a control unit 21, which
`
`is composed of an electronic block 22 including A/D and D/A converters connecta-
`
`ble to the sensor 10, a microprocessor 24 for analyzing measured data, and a dis-
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`play 26 for presenting measurement results.” Id., 10:16-22; APPLE-1003, ¶[0072].
`
`2. Overview of Ohsaki
`Ohsaki is generally directed to a wrist-worn “pulse wave sensor” 1 featur-
`
`ing a “detecting element” 2 and a translucent board 8 with a convex surface that
`
`is placed “in intimate contact with the surface of the user’s skin” when the sen-
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`sor is worn. APPLE-1009, Title, Abstract, ¶¶[0016], [0017], FIG. 1.
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`17
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`
`
`APPLE-1009, FIG. 1 (annotated).
`
`
`
`In more detail, and as illustrated in Ohsaki’s FIG. 2 (reproduced below),
`
`Ohsaki’s “detecting element” 2 includes “a package 5, a light emitting element
`
`6 (e.g., LED), a light receiving element 7 (e.g., PD), and a translucent board 8.”
`
`APPLE-1009, ¶[0017]. “The package 5 has an opening and includes a” sub-
`
`strate in the form of “circuit board 9,” on which light emitting element 6 and
`
`light receiving element 7 are arranged. Id.; APPLE-1003, ¶[0074].
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`18
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`
`
`
`
`APPLE-1009, FIG. 2 (annotated).
`
`Translucent board 8 is “attached to the opening of the package 5” and is
`
`arranged such that, when the sensor is worn “on the user’s wrist…the convex
`
`surface of the translucent board…is in intimate contact with the surface of the
`
`user’s skin”; this contact between the convex surface and the user’s skin is said
`
`to prevent slippage, which increases the strength of the signals obtainable by
`
`Ohsaki’s sensor. APPLE-1009, ¶¶[0009], [0010], [0015], [0017], [0023]-
`
`[0025], FIGS. 1, 2, 4A, 4B; APPLE-1003, ¶[0075].
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`19
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`3. Overview of Schulz
`Schulz is titled “Pulse Oximetry Ear Sensor”; as illustrated in Schulz’s
`
`FIG. 19C (reproduced below), Schulz describes a sensor with “opposingly posi-
`
`tioned housings 1902 and 1903 that house one or more sensor optical compo-
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`nents.” APPLE-1013, ¶[0065].
`
`Schulz, FIG. 19C.
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`
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`20
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`The “inward facing shells 1905 and 1906” included within these housings
`
`are said to feature “windows 1919 and 1924 that provide an aperture for transmis-
`
`sion of optical energy to or from a tissue site”; “lenses 1920 and 1921” are pro-
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`vided in the form of “[t]ranslucent silicone material” that “covers windows 1919
`
`and 1924.” Id., ¶[0067], FIGS. 19A-D.
`
`Schulz avoids “saturation of the light detector” by placing “a thin sheet of
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`opaque material” “beneath window 1919 or 1924,” with “a window in the opaque
`
`material provid[ing] an aperture for transmission of optical energy to or from the
`
`tissue site.” Id., [0073], FIGS. 19A-D. The opaque material blocks light, and the
`
`window in the opaque material can be sized as needed to block the proper amount
`
`of light from entering the aperture. Id.; APPLE-1003, ¶[0078].
`
`4. Overview of Mendelson-2006
`Mendelson-2006 details the structure and testing of a “wireless wearable
`
`pulse oximeter” system. APPLE-1010, Abstract, 1. By wirelessly transmitting
`
`physiological data, Mendelson-2006’s system provides “numerous advantages,” in-
`
`cluding the ability to determine the condition of a subject “remotely.” Id.
`
`The system includes a sensor module, a receiver module, and a PDA. Id.,
`
`913. As shown in Mendelson 2006’s FIGS. 1 and 2 (reproduced below), the
`
`sensor module includes an “optical reflectance transducer” having two LEDs
`
`and a photodiode that “receives and processes the [photoplethysmographic
`
`21
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`(PPG)] signals” and transmits these signals wirelessly to the PDA through the
`
`receiver module. Id.; FIGS. 1 and 2 (reproduced below).
`
`
`
`APPLE-1010, FIG. 1 (left) and FIG. 2 (right).
`
`The PDA is a handheld computing device that provides a “touch screen” and
`
`a simple graphical user interface (GUI) “configured to present the input and output
`
`information to the user and allow[ for] easy activation of various functions.” AP-
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`PLE-1010, FIG. 3 (reproduced below); APPLE-1003, ¶[0081].
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`22
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`
`APPLE-1010, FIG. 3.
`
`
`
`5.
`
`Combination of Mendelson-799, Ohsaki, Schulz, and
`Mendelson-2006
`As explained above in Section IV.B.1, Mendelson-799 discloses a “sensor
`
`for use in an optical measurement device” featuring a sensor housing 17 that ac-
`
`commodates a “light source 12 composed of three closely spaced light emitting el-
`
`ements (e.g., LEDs or laser sources)” and an “array of discrete detectors (e.g., pho-
`
`todiodes).” APPLE-1012, Title, Abstract, 9:22-40, 10:16-37, FIGS. 7, 8; APPLE-
`
`1003, ¶¶[0062]-[0072], [0089].
`
`Further, to the extent that Mendelson-799 does not disclose sensor housing
`
`17 as including an opaque wall that surrounds the accommodated components, a
`
`POSITA would have found it obvious to connect, to the portion of sensor housing
`
`23
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`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`17 illustrated in Mendelson-799’s FIG. 7 (reproduced below), an opaque wall con-
`
`figured to circumscribe the array of discrete detectors included in detector rings 16
`
`and 18. Id., 9:24-40, FIG. 7; APPLE-1003, ¶¶[0062]-[0072], [0090].
`
`
`
`APPLE-1012, FIG. 7 (annotated, with additional section view).
`
`As detailed below, a POSITA would have been motivated to combine Men-
`
`delson-799, Ohsaki, Schulz, and Mendelson-2006 (hereinafter “Mendelson-
`
`Ohsaki-Schulz-Mendelson-2006 combination” or “Mendelson-Ohsaki- Schulz-
`
`Mendelson-2006”) to obtain additional benefits. APPLE-1003, ¶¶[0091]-[0117].
`
`(a) Light permeable cover comprising a protruding convex surface
`
`Mendelson-799 does not describe a cover configured to be located between
`
`user tissue and the components accommodated within sensor housing 17, but a
`
`24
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`

`Attorney Docket No. 50095-0024IP1
`IPR of U.S. Patent No. 10,631,765
`POSITA would have recognized that a light permeable cover with a protruding
`
`convex surface would improve adhesion between the sensor and the user’s tissue,
`
`improve detection efficiency, and protect the elements within sensor housing 17.
`
`APPLE-1003, ¶[0092]; APPLE-1009, ¶¶[0015], [0017], [0025], FIGS. 1, 2, 4A,
`
`4B; APPLE-1008, ¶¶14-15, FIG. 2; APPLE-1024, ¶¶[0033], [0035], FIG. 6.
`
`Indeed, by the Critical Date, noninvasive optical physiological sensors com-
`
`monly employed covers. See, e.g., APPLE-1009, ¶¶[0015], [0017], [0025], FIGS